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Two recent Board final decisions denying the patent owner’s motion to amend claims provide further guidance regarding the strict and exacting requirements for filing a successful claims during an Inter Partes Review (IPR) proceeding.

Intellectual Ventures - Address the level of ordinary skill

In Intellectual Ventures Management, LLC v. Xilinx, Inc., the Board denied Xilinx’s motion to amend its claims (IPR2012-00018, Paper No. 35, February 10, 2014), after allowing Xilinx a second chance to file a motion to amend and comply with Idle Free Systems, Inc. v. Bergstrom, Inc.(IPR2012-00027, Paper No. 26). The petitioner Xilinx has the burden of proof to establish that it is entitled to amend the claims under 37 C.F.R. § 42.20(c) and the Idle Free clarified that the Petitioner must not only distinguish the claims from the prior art of record, but must also demonstrate the patentability of those claims. The Board was not persuaded that Xilinx met this burden, finding that the features in the substitute claims were met by additional prior art presented by Intellectual Ventures for the first time in its opposition to the motion to amend. (Intellectual Ventures, Paper No. 35, at p. 41).

Moreover, the Board stated that Xilinx did not address “in any meaningful way” the level of ordinary skill in the art and what was previously known, or at least within the ordinary creativity and skill set of a person of ordinary skill in the art, regarding interposers and elastomers in general. The Board noted that “at least some explanation should have been provided as to why a skilled artisan, applying his or her own knowledge and creativity, would have not found the proposed substitute claims obvious.” (Paper No. 35, at p. 42).

This decision shows that the requirements for proving non-obviousness are very stringent, and that patent holders seeking to amend their claims in IPR must put forth a non-obviousness argument that includes a discussion of the level of ordinary skill.

Nichia - Clearly identify which claim is being replaced and what limitations are new or deleted; provide claim construction for substitute claims

Pursuant to 35 U.S.C. § 316(d)(1) and 37 C.F.R. § 42.121(a)(3)., a patent owner may, for each challenged claim, propose a reasonable number of substitute claims. The Board noted that, although the motion indicated that all of the proposed claims are new claims, “Emcore fails to demonstrate which proposed new claims is replacing which specific challenged claim,” that is, “none of the proposed new claims are traceable to any challenged claims.” Without such an indication, the Board lacked necessary information and therefore could not make a determination as to the reasonableness of the number of substitute claims for each original claim. (Paper No. 68. at p. 50).

Pursuant to 37 C.F.R. § 42.121(b), a motion to amend claims must include a claim listing that clearly identifies the changes so that new limitations and deleted limitations can be identified with ease. Emcore’s claim listing was inaccurate and did not indicate any deletions of limitations. The Board noted, “the burden should not be placed on the Board to determine which limitations are added and which limitations are eliminated,” because this causes “unnecessary delay.” (Paper No. 68. at p. 51).

Emcore introduced these new claim terms including “cratering of the semiconductor during bonding” but did not provide constructions for these new terms, nor did Emcore provide “any explanation as to how one with ordinary skill in the art would have determined whether a bonding is reliable or not, or identify whether the specification sets forth a special definition.” The Board held that, without a proper construction of the new claim terms, Emcore failed to meet its burden of proof to establish that it is entitled to amend the claims under 37 C.F.R. § 42.20(c). (Paper No. 68. at p. 52).

The Board also determined that Emcore’s motion was deficient for failing to respond to a ground of unpatentability, and for lack of written description support. In its motion to amend, Emcore had removed all of features of the original challenged claims, including a feature regarding a temperature range asserted to produce an “unexpected result” in resistance. The Board held that Emcore did not explain adequately why the removal of these limitations was responsive to a ground of patentability, and that, “Emcore fails to appreciate that a patent owner may not seek to broaden a challenged claim in any respect, in the name of responding to a ground of unpatentability.” The Board noted that “a proposed substitute claim is not responsive to a ground of unpatentability of a challenged claim if it removes any features of the challenged claim being replaced, and even more so, as here, if all the features of the challenged claim are being removed.” See id. at 35. In this sense, the removal of claim limitations did not comply with the strict requirements of 37 C.F.R. § 42.121(a)(2).

With respect to written description support, the Board found that Emcore failed to provide any citation to the original disclosure of the application that issued as a patent, and that Emcore’s motion to amend did not cite the originally filed specification for the actual claim language of each proposed substitute claim. The Board noted that Emcore’s citation to the original disclosure were “vague and inadequate” to determine whether the written description support for the proposed substitute claims. As such, Emcore did not comply with the strict requirements of 37 C.F.R. § 42.121(b)(1).

In this decision, the Board again demonstrates the strict requirements for a patent owner to successfully amend its claims. The patent owner bears a high burden in demonstrating patentability of the proposed substitute claims, and arguments put forth by the patent owner should be clear and responsive to all the requirements and standards set forth by statute and the Board. As of February 11, the date of the Emcore decision, it is believed that no patent owner has met this burden and successfully added claims during an IPR proceeding.

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.

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